Traditional Medicinals, Inc. v. Flippa Chick
Claim Number: FA1006001328702
Complainant is Traditional
Medicinals, Inc. (“Complainant”), represented by Jay H. Geller, of Jay H. Geller, a Prof. Corp.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <smoothmoveherbaltea.com>, registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2010.
On June 10, 2010, MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <smoothmoveherbaltea.com> domain name is registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the name. MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@smoothmoveherbaltea.com. Also on June 17, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <smoothmoveherbaltea.com> domain name is confusingly similar to Complainant’s SMOOTH MOVE mark.
2. Respondent does not have any rights or legitimate interests in the <smoothmoveherbaltea.com> domain name.
3. Respondent registered and used the <smoothmoveherbaltea.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Traditional Medicinals, Inc., holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SMOOTH MOVE mark:
Mark Reg. No. Date Issued
SMOOTH MOVE 1,258,223 November 22, 1983
SMOOTH MOVE 2,520,275 December 18, 2001
SMOOTH MOVE 3,344,362 November 27, 2007
Complainant uses its SMOOTH MOVE mark to market herbal and nutritional supplements and herbal teas for medicinal and laxative purposes.
Respondent, Flippa Chick, registered the disputed domain name on December 9, 2009. The disputed domain name resolves to a website that prominently features Complainant’s products for sale and also features links to other websites that sell Complainant’s products.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established rights in the SMOOTH MOVE mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that Respondent’s <smoothmoveherbaltea.com>
domain name is confusingly similar
to Complainant’s SMOOTH MOVE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains
Complainant’s SMOOTH MOVE mark in its entirety after removing the space
separating the terms of the mark, adds the descriptive terms “herbal tea” and
adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of
descriptive terms creates a confusing similarity between the disputed domain
name and Complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb.
Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in
its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion
to complainant’s business.”); see also
Miller Brewing Co. v. Domain Active Pty.
Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the
<millerbeers.com> domain name was confusingly similar to the
complainant’s MILLER mark, because “[t]he addition of a descriptive term that
describes Complainant’s business to Complainant’s registered mark, does not
remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”). The Panel also finds that the removal of a
space separating the terms of Complainant’s mark and the addition of a gTLD are
irrelevant in distinguishing a disputed domain name and a mark. See
Bond & Co. Jewelers, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights and legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant’ has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent has never been commonly known by the disputed domain name. The WHOIS information for the disputed domain name indicates the registrant is “Flippa Chick.” There is no additional evidence that Respondent is authorized to use Complainant’s SMOOTH MOVE mark for any purpose. Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s <smoothmoveherbaltea.com> domain name was registered on December 9, 2009. The disputed domain name resolves to a website that prominently displays Complainant’s herbal teas and other medicinal supplements for sale and also displays links to other websites from which Internet users can purchase Complainant’s products. The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of the <smoothmoveherbaltea.com> to operate a website that sells Complainant’s own products without Complainant’s authorization constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Respondent is attempting to profit from the use of the
confusingly similar disputed domain name and attempting to attract Internet
users to Respondent’s website where it profits from the sale of Complainant’s
products. The Panel finds that
Respondent’s use of the confusingly similar disputed domain name to attract
Internet users and profit by creating a strong likelihood of confusion with
Complainant’s SMOOTH MOVE mark is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb.
Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed
domain name to sell the complainant’s products without permission and mislead
Internet users by implying that the respondent was affiliated with the complainant);
see also Whirlpool Props., Inc. v.
Ace Appliance Parts & Serv., FA 109386 (Nat. Arb. Forum May 24, 2002)
(holding that the respondent’s use of the <whirlpoolparts.com> domain
name to operate a website selling the complainant’s products constituted bad
faith registration and use under the Policy, despite the fact that the
respondent operated a storefront business for 27 years selling the
complainant’s parts and appliances).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <smoothmoveherbaltea.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 15, 2010
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